START-UP TRADEMARK OPPOSITION POLICY

DECISION

Shihadeh Carpets v. Hutchinson Associates Inc.

Claim Number: FA0204000110775

PARTIES

Complainant is Shihadeh Carpets, Ardmore, PA (“Complainant”) represented by Peter L. Shihadeh.  Respondent is Hutchinson Associates Inc., Chicago, IL (“Respondent”) represented by Richard J. Gurak, of Welsh & Katz, Ltd.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <orientalrugs.biz>, registered with Namescout.com.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Linda M. Byrne, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, because Complainant timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel, and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 23, 2002; the Forum received a hard copy of the Complaint on May 22, 2002.

On May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

On June 17, 2002, Respondent requested an extension with which to file its Response.  The Forum granted Respondent’s request on June 18, extending the Response deadline to July 1, 2002.

A timely Response was received and determined to be complete on June 28, 2002.

On July 12, 2002, pursuant to STOP Rule 6(b), the Forum appointed Linda M. Byrne, Esq. as the single Panelist.

RELIEF SOUGHT

The remedy sought is the transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's domain name <ORIENTALRUGS.BIZ> is identical to a trademark in which the Complainant has rights, ORIENTALRUGS.COM; that the Respondent has no rights or legitimate interest in respect of the domain name; and that the domain name has been registered or is being used in bad faith.

B. Respondent

Respondent contends the Complainant does not possess any trademark rights in ORIENTALRUGS.COM, that Respondent does have rights and a legitimate interest in <ORIENTALRUGS.BIZ>, and that Respondent has acted in good faith.

FINDINGS

Complainant registered the domain name ORIENTALRUGS.COM in 1995, and it will be assumed that Complainant has used the domain name since that time. Complainant provided no documented support for its use of ORIENTALRUGS.COM during the past seven years, but there has been no claim to the contrary.  Complainant's business sells rugs via the <ORIENTALRUGS.COM> website.

Complainant does not own a federal trademark registration for ORIENTALRUGS or ORIENTALRUGS.COM.  Complainant alleges common law trademark rights in the term ORIENTALRUGS.COM.

Before any notice to Respondent of the dispute, Respondent created a website to sell oriental rugs.  Respondent owns a company based in Chicago, Illinois called Fortunate Discoveries, which sells oriental rugs.  The company has been selling oriental rugs since 1995.  The website for Fortunate Discoveries, <fortunatediscoveries.com>, has been active since 1998.  This website provides information about oriental rugs.  In March, 2002, Respondent alleges that it registered the domain name <ORIENTALRUGS.BIZ> for use as the name of its existing website, currently located at <fortunatediscoveries.com>.

DISCUSSION

Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may be filed only when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (GTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant owns no trademark registration for ORIENTALRUGS or ORIENTALRUGS.COM.  Complainant has alleged rights in its mark at common law.  See Crazy Creek Prods., Inc. v. Siemen's Bus. Servs., FA 102795 (Nat. Arb. Forum Feb.12, 2002) (finding that the Complainant satisfied STOP POLICY ¶ 4 (a)(i) by demonstrating its common law rights in the Crazy Creek mark.  Complainant has made use of the <ORIENTALRUGS.COM> domain name in connection with the sale of oriental rugs since 1995.  The ORIENTALRUGS.COM term appears prominently on Complainant's website (although it appears in small letters on Complainant's stationery and business cards).  However, Complainant has not provided a sufficient showing that any recognizable common law trademark rights have accrued in the <ORIENTALRUGS.COM> domain name.  Complainant must make more than mere showing that there has been use of the ORIENTALRUGS.COM term to identify the products sold by Complainant.  Complainant must also show that the mark is sufficiently distinctive or has acquired secondary meaning.

This Panel concludes that the term "oriental rugs" is generic, and can be afforded no common law trademark protection.  Even though Complainant has used the term ORIENTALRUGS.COM for seven years, a generic term is never capable of acquiring secondary meaning such that the term becomes an enforceable trademark.  See fabric.com v. Song, FA 109701 (Nat. Arb. Forum June 1, 2002) (Complainant did not demonstrate rights in the generic term "fabric").  Third parties have attempted to file United States Trademark Registrations for marks containing the term "oriental rugs," but the U.S. Trademark Office has required a disclaimer of the words "oriental rugs."  (Respondent's ANNEX-3).  This disclaimer requirement means that the U.S. Trademark Office considered "oriental rugs" to be generic or merely descriptive.  Efutures.com, LLC v. Canon Trading Co., FA 103056 (Nat. Arb. Forum Feb. 27, 2002) (finding that, in light of the U.S. Patent and Trademark Office's refusal to register Complainant's mark because of the mark's genericness, the Complainant did not establish "protectable rights" in its EFUTURES mark at common law).

The term "oriental rugs" is commonly used in the marketplace by third parties that sell oriental rugs.  Respondent's internet search, using the Yahoo! search engine, for the words "oriental rugs," produced over 90,000 web page matches were referenced in the search results.  (Respondent's ANNEX-2).  Many of these references were for businesses that used the generic name "oriental rugs" to identify the goods they sell. For example, two of Complainant's competitors' website domain names are <orientalrugs.net> and <orientalrugs.org>.  (Respondent's ANNEX-2).

Thus, Complainant does not have any recognizable rights in the domain name <ORIENTALRUGS.BIZ>.  Accordingly, ¶ 4(a)(i) of the STOP POLICY has not been satisfied.  Although it is not necessary to analyze the last two factors because the first factor has not been satisfied, the final two factors will be briefly discussed below.  Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat. Arb. Forum Feb. 6, 2002) (dismissing the Complaint because (1) the Complainant did not hold a registered trademark in VVG, and (2) the Complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the VVG mark identified goods or services unique to the Complainant).

Respondent’s Rights or Legitimate Interests

Respondent may demonstrate its rights or interests by proving (1) the Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; (2) before any notice to the Respondent of the dispute, it had used, or made demonstratable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (3) the Respondent has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.  (STOP Policy ¶ 4(c))

Respondent has not proven any legal trademark rights or registration for the <ORIENTALRUGS.BIZ> domain name.  Respondent has not provided evidence to prove the Respondent has been commonly known by the domain name <ORIENTALRUGS.BIZ>.  Respondent stated that before any notice of this dispute, Respondent used the domain name <fortunatediscoveries.com>. Respondent alleged that it intended to use <ORIENTALRUGS.BIZ> domain name as the name of this existing website.  However, Respondent submitted no evidence to support this intention or to support any preparations to effect this domain name change. Thus, this Panel concludes that Respondent has not clearly demonstrated its rights or legitimate interest in the <ORIENTALRUGS.BIZ> domain name.  Nevertheless, this conclusion is irrelevant in view of the Panel's determination regarding the first factor.

Registration or Use in Bad Faith

Respondent is not using the domain name <ORIENTALRUGS.BIZ>, so it clearly is not being used in bad faith.  This Panel concludes that no evidence was provided that the domain name was registered in bad faith, so Complainant has failed to provide any evidence to support the allegation of bad faith.

In summary, Complainant has failed to prove that it owns enforceable trademark rights in the term "ORIENTAL RUGS" or "ORIENTALRUGS.COM."  In addition, Complainant has failed to prove that Respondent registered or used <ORIENTALRUGS.BIZ> in bad faith.

DECISION

Accordingly, this Panel finds in favor of the Respondent.  The Panel dismisses the complaint, and thereby denies Complainant's request for transfer of the <ORIENTALRUGS.BIZ> domain name from Respondent to Complainant.  There are no further challenges pending against this domain name under the STOP Policy.

Linda M. Byrne, Esq.
Dated: July 24, 2002

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